Articles Posted inTTAB – Trademark Trial And Appeal Board

There’s no smoke, but a federal trademark lawsuit fire is burning between Starbuzz Tobacco and The Hershey Chocolate Company. The trademark lawsuit is in response to Hershey’s Trademark Trial & Appeal Board (“TTAB”) opposition to Starbuzz’s trademark application for Citrus Mist for use on e-cigarette flavored liquids. In the TTAB opposition, Hershey contends that Starbuzz’s Citrus Mist trademark is likely to cause consumer confusion with Hershey’s Citrus Mist® trademark registration covering breath mints and candy. Hershey alleges that “consumers are highly likely to associate [Starbuzz’s] chemical flavorings with the flavors of Hershey’s CITRUS MIST brand candy and mints, and make purchasing decisions based on that association.”

Starbuzz’s lawsuit seeks the court’s determination that its Citrus Mist trademark for e-cig flavoring does not infringe or dilute Hershey’s similar trademark. Starbuzz is already the owner of a federally registered Citrus Mist® trademark for pipe tobacco and flavored tobacco, which it has been using since 2008. Starbuzz reasons that the absence of any instances of actual confusion over the last six years between the parties’ respective Citrus Mist trademarks supports its conclusion that expansion into the related e-liquid market for e-cigarettes would not result in confusion and, thereby, infringement. Additionally, Starbuzz argues that labels of the respective products are “completely different” and easily allow consumers to differentiate between the two products and would not lead to confusion.

Regarding the dilution claim, Hershey would have to show that its Citrus Mist trademark was famous before Starbuzz’s adoption of its Citrus Mist trademark. Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002) (holding that dilution protection extends only to those whose mark is a – nationally recognize household name); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1014 (9th Cir. 2004) (ruling that survey evidence of sixty-five percent of the attitude of people who intended to purchase a new car recognized the NISSAN trademark coupled with promotional expenditures of $898 million during the period 1985–91 were not conclusive to support – as a matter of law – at summary judgment that the NISSAN trademark was famous as of 1991). Starbuzz contends Hershey’s Citrus Mist trademark is not widely recognized by the general consuming public, which in comparison to Hershey’s Kisses® trademark, I would have to agree.

Disney’s trademark attorneys sought an extension of time at the U.S. Patent & Trademark Office’s Trademark Trial & Appeal Board while they review their options in legally challenging DJ Deadmau5’s application to register his mouse-head logo. Joel Zimmerman, better known by his Deadmau5 stage name, is a well-known music producer and DJ. For many years, the DJ has used his mouse-head logo on numerous album covers and also worn it as a headdress at his live performances and concerts.

The DJ filed a trademark application at the USPTO to register the mouse-head logo for use on a variety of goods and services including stereo turntables, DVDs featuring music, coffee, beer, clothing, entertainment services in the nature of performances by a musical artist, and even BMX bikes. After a trademark application is filed, if the examining attorney finds a lack of potential confusion with any previously registered or pending trademarks, the application is published for opposition for thirty days. During this opposition window, any person or company that believes it will be harmed by the registration may either file an opposition to the registration or seek an extension of time to oppose the registration. Disney has chosen the latter route while it evaluates its legal options in the next ninety days. Disney is the long time owner of the trademark in mouse ears depicted here, which are incorporated into the ubiquitous hats sold at Disney theme parks.

The lawsuit appears to be an extension of ELVH’s 2010 opposition proceeding filed with the Trademark Trial & Appeal Board to prevent Kelly Van Halen’s registration of her name as a trademark used on furniture and building construction and management. In the opposition ELVH argues that although it does not provide those exact goods or services, Kelly’s use of the famous last name is likely to confuse consumers into believing there is a license or sponsorship from the famous surname. The lawsuit, however, appears to have been filed when Kelly expanded the use of the last name on clothing, which fashion goods ELVH contends are directly within its prior use domain.

Without the benefits of a trademark registration certificate establishing its priority rights, the Academy alleges and must now spend resources proving that it has been using the ACM trademark and ACM derivative marks since at least 1974 in association with services and goods in the country music industry. The Academy also alleges incurring, along with its media partners, expenditures of over $30,000,000.00 over the last 22 years in advertising and marketing the ACM marks, making the trademarks famous.

ACM Records, like a good trademark owner should, filed and obtained a USPTO trademark registration for the “ACM Records” trademark in 2008. If the Academy had previously filed and registered its ACM trademarks, Defendant’s trademark application would probably have been refused registration by the USPTO examining attorney. Instead, the Academy claims that ACM Records filed an opposition with the Trademark Trial & Appeal Board (“TTAB”) in February of 2013, asserting a likelihood of confusion and dilution would arise from the Academy’s application to register “The ACM Experience.” Thus the Academy seeks declaratory judgment to its rights to register and expand the use its ACM family of trademarks.

The wife and manager of Victor Willis, a former member of the disco group the Village People (yes, you read “wife” correctly, the Village People had at least one straight “macho man”), filed three petitions for cancellation of Can’t Stop Productions, Inc.’s (“CSP”) three trademark registrations, two for the word mark VILLAGE PEOPLE and one for the design mark shown to the right. CSP filed motions for summary judgment on Willis’ pleaded grounds of fraud, abandonment and genericness in each of the three cancellation proceedings, which the Trademark Trial & Appeal Board (“TTAB”) consolidate in its order because of the sufficient commonality of the factual and legal issues.

CSP had the initial burden to show with sufficient evidence, if unopposed, that there is no genuine dispute of material fact on the fraud, abandonment and genericness cancellation claims. The burden would then shift to Willis to show that there are material facts in dispute to be resolved at trial. The TTAB summarized Willis’ abandonment claims:

Petitioner makes similar allegations regarding abandonment of all three of the registered marks, namely that since the 1980’s the marks have only been licensed for live performances and no new recordings have been made since 1985; that the mark is for a “concept group,” not a musical group; and that changes have been made to the design mark because of changes to certain of the characters depicted in the mark. Petitioner alleges that these changes amount to abandonment of all three marks without an intent to resume use.

The USPTO Trademark Attorney refused Davide Mebane’s intent-to-use trademark application to register the Spoons Yogurt design mark on the Principal Register for “frozen yogurt” based on the likelihood of confusion with the previously registered Big Spoon Yogurt design trademark for “retail frozen dessert store services featuring frozen yogurt” under 15 U.S.C. §1052(d). In any likelihood of confusion analysis, the Board considers the du Pont factors of (1) the similarity/dissimilarity of the trademarks, and (2) the similarities of the goods to be key. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Unfortunately for Applicant, he only discussed the similarity of the marks in his brief.

In considering the similarity of Applicant’s mark and the registered mark, the Board noted that it “has been consistently held that similarity in any one of the elements of sound, appearance or meaning is sufficient to support a finding of likelihood of confusion.” Thus, although the Board agreed with the Applicant that “Big Spoon” dominates in the registered trademark and the word portion – as opposed to the design – will leave more of an impression in the consumers mind, it disagreed that the term “spoon” is weak because of widespread use.

The board examined twenty-two live registrations that included the term “spoon” cited by the Applicant and deemed many to be part of a phrase without any evidence of actual use. As a result, the “third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them.” The Board also gave a cold shoulder to the webpages Applicant submitted to show third-party use of “spoon” for similar services because they were too few in number and had a different commercial impression than that of registrant’s mark. Further, due to the shared term “spoon” in both design marks that consumers will not simultaneously encounter, the Board found that “while the marks differ in appearance, the marks are similar in sound, connotation and commercial impression; these similarities outweigh the dissimilarity in appearance.”

Applicant amended its application during prosecution to seek registration under Section 2(f) of the Trademark Act based on acquired descriptiveness. The Examining attorney, however, maintained the refusal because the evidence of acquired distinctiveness was insufficient. The sole issue on appeal was whether Applicant met its burden of establishing, by a preponderance of the evidence, that its trademark had acquired distinctiveness under Section 2(f).

The Trademark Examining Attorney refused registration of Gardenlife, Inc.’s application for the trademark EZ GRO for “living flowers and plants and plant seeds” in light of the previously registered EEZY-GRO trademark for “flower pots and planters” under 15 U.S.C. §1052(d). The examining attorney also required a disclaimer of the word “GRO.” On appeal, applicant capitulated and included a disclaimer of the word “GRO.” As a procedural matter, the Board excluded materials attached to applicant’s brief from consideration on appeal because they were untimely under 37 C.F.R. § 2.142(d). Thus, the sole remaining issue on appeal was whether there was a likelihood of confusion between the two trademarks.

We find the marks EZ GRO and EEZY-GRO substantially similar in terms of appearance, both comprised of two terms; the second in each being the identically misspelled word GRO (“grow”), the first in each being different fanciful spellings of the word “easy,” respectively EZ and EEZY. Although registrant’s mark contains two additional letters, they are not likely to be recognized and do not serve as distinguishing features because of their imbedded placement within the overall structure of registrant’s mark. In addition, and contrary to applicant’s contention, the hyphen in registrant’s mark is not a distinguishing feature and serves mainly as spacing between the two terms. See Goodyear Tire & Rubber Co. v. Dayco. Corp., 201 USPQ 485, 489 n.4 (TTAB 1978) (difference of hyphen insignificant).

Los Angeles, CA – Rorion Gracie, the patriarch of the famed Gracie family from Brazil, filed a trademark infringement, Lanham Act § 43(a) unfair competition, and dilution lawsuit against Black Silver Enterprises and Un Mi Lee. Gracie is a 9th degree Red Belt in Brazilian Jiu-Jitsu and has been an owner of the “Gracie Jiu Jitsu” commercial endeavors since opening the first location in Southern California in 1978. In 1997, Plaintiff’s Gracie Gear trademark was registered with the USPTO for use on clothing and related merchandise. On September 20, 2005, Plaintiff received another registration for the mark Gracie for use on clothing.

Ten days after the Gracie trademark registered, Defendant Black Silver filed an application with the USPTO to register its GRACIE mark for use on clothing. The USPTO issued an Office Action refusing to register Black Silver’s proposed mark due to a likelihood of confusion with Plaintiff’s registered trademarks. In October of 2006, Defendant filed petitions to cancel Plaintiff’s trademarks at the Trademark Trial and Appeal Board (“TTAB”), which proceedings are still continuing. Plaintiff alleges that in mid-2009 Defendants demanded payment of $250,000 as a license fee to use the Gracie trademark. As a result, Plaintiff filed the instant action. The case is Rorion Gracie v. Black Silver Enterprises, Inc. et al., CV 09-8273 GW (C.D. Cal. 2009).

Los Angeles, CA – Nightclub promoter and performer Filthy McNasty – he legally changed his name – filed a trademark infringement lawsuit against Salon Corona, Inc. at the Los Angeles Federal District Court. Since 1980, Plaintiff McNasty has used the marks “FM Station Live” and “FM Station” for offering nightclub, live music and cabaret services. In 1989, the FM Station Live trademark was registered with the U.S. Patent & Trademark Office and has withstood a cancellation proceeding at the Trademark Trial and Appeal Board. Click to read TTAB decision.

The complaint alleges that Defendant Salon Corona and Shawn Crosby have infringed the FM Station trademark by operating a nightclub and live music venue in North Hollywood, California under an unauthorized “FM Station” live trademark. Plaintiff accuses the Defendants of intentionally infringing on his trademarks. Although not mentioned in the complaint, the TTAB sheds some light on the Defendants’ prior knowledge of the FM Station Live trademark. Plaintiff McNasty was promoting monthly shows at the Defendants’ location under the FM Station mark. The case is titled Filthy McNasty v. Shawn Crosby, et al., CV08-0695 RGK (C.D. Cal. 2008).